The Inescapable Trap – A Case for Reconsideration?

It is the task of the Enlarged Board of Appeal of the European Patent Office (EPO) to issue opinions and decisions on points of law which thereafter constitute the highest level of judicial authority within the EPO¹. The European Patent Convention itself does not provide for a mechanism safeguarding that decisions and opinions of the Enlarged Board of Appeal are uniformly applied in all future cases. However, Article 21 of the Rules of Procedure of the Boards of Appeal² prescribes ‘Should a Board of Appeal consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the Enlarged Board of Appeal, the question shall be referred to the Enlarged Board of Appeal’. In other words, the Rules of Procedure achieve a precedent-setting effect by obliging the Boards of Appeal either to follow the Enlarged Board of Appeal in its interpretation of the EPC or to refer the previously decided point for a second time to the Enlarged Board of Appeal.

Whereas it is desirable that the interpretation of the EPC by the Enlarged Board of Appeal is taken into consideration by national instances in applying the EPC, these instances are independent in their interpretation. The Enlarged Board of Appeal has been named a persuasive authority³. However, if its considerations do not happen to succeed in convincing a national court faced with a question already decided upon by the Enlarged Board of Appeal, the national court will come to different conclusions. Hence, the harmonizing effect of the rulings of the Enlarged Board of Appeal depends on its persuasive power in the individual case.